Google Sued for Trademark Infringement Based on Third Level Subdomain–Jews for Jesus v. Google

It’s no surprise that Google has been sued again for trademark infringement, but the basis of this lawsuit is surprising. Rather than another lawsuit over the sale of trademarked keywords to deliver ads (along the lines of the GEICO, American Blinds, Rescuecom and JTH Tax cases, or the dozens of international lawsuits), this lawsuit is based on a Blogspot blog URL. Because of its comparative novelty, this lawsuit raises some complex and unsettled legal issues.

Background

The basis of this lawsuit is a Blogspot-hosted blog at jewsforjesus.blogspot.com. Until the lawsuit, this blog was basically dormant–there were 3 posts between Jan. 30, 2005 and May 9, 2005, and there had been no posts for over 7 months. The first three posts suggest a tone of mild criticism against the organization, as does the username (“Whistle Blower”).

Why Did the Plaintiff Sue?

I’m not exactly clear why Jews for Jesus cared about this blog enough to tangle with the mighty Google. Thinking out loud, I can hypothesize four possible reasons (none of them especially compelling).

First, maybe the organization wanted to shut down a griper. If so, a lawsuit against media darling Google is one sure-fire way to counterproductively ensure that the griper’s words will be seen by all the world.

Also, using trademark law to shut down a griper never produces very good results. At best, a successful lawsuit causes the griper to find a new home under a different name; but the content can remain online, and the lawsuit gives the griper more grist for the mill (such as, in this case, reinvigorating a dormant blogger).

It does bear noting that Jews for Jesus has gone after an Internet griper before in an early and influential Internet trademark case, Jews for Jesus v. Brodsky. Ronald Coleman has some comments about that.

Second, maybe the blog was getting too good search engine placement. This doesn’t seem too likely given the blog’s low PageRank of 2. The blog didn’t show on the first page of Google search results for “Jews for Jesus” (although it may have been pushed down by all of the well-placed articles about the lawsuit now showing up on that term). The blog did show up as the 5th search result for “jewsforjesus,” but I wonder how many people search for that term. All told, I suspect the blog doesn’t get much search engine traffic.

Third, maybe Jews for Jesus believes that it needs to bring a lawsuit to adequately police its trademark rights. Trademark owners do have some obligations to enforce their rights against known infringers at peril of losing some or all of their trademark rights, so there is a concern here. However, I find that this policing obligation is often way overstated (usually as a business development tool for trademark lawyers), and I’m skeptical that Jews for Jesus’ failure to go after a griper using a third level subdomain would have any implications for their future trademark rights. But perhaps bright minds would disagree on this point.

My fourth and final hypothesis is that Jews for Jesus wanted some low-cost press. Suing Google is a press strategy; it’s guaranteed to get your name slathered in headlines, and we’ve seen this Google-lawsuit-as-PR tactic used by others such as JTH Tax and Click Defense. Of course, this works only if you subscribe to the view that there is no such thing as bad press. Dubious lawsuits against well-funded defendants based on socially-protected speech often play poorly in the press…and in the courts.

The Trademark Infringement Claim

As for the merits of this lawsuit, blog names can give rise to trademark infringement. A blog can be a vehicle for social commentary, an entrepreneurial venture, or both. In the case where bloggers are building a business, the blog name can be a trademark. In that respect, a blog name is no different from the business name or a domain name that acts as the source identifier. And if a commercial-oriented blog’s name is confusingly similar to someone else’s trademark, the name can support a trademark infringement claim.

However, there may be a difference between a second-level domain name (blogspot.com) and a third-level subdomain (jewsforjesus.blogspot.com). It’s not entirely clear that consumers attach equal importance to third-level subdomains when seeing the domain name unattached to the content. And certainly, by the time anyone arrived at the blog, it was clear that the blog wasn’t run by the organization. (The “About” box now reads “This blog is not authorized by, affiliated, connected, or otherwise associated with the California non-profit religious organization Jews for Jesus,” although I don’t know if this was always the case–there’s no entries in archive.org for the blog).

To overcome the relative unimportance that many consumers may place on third-level subdomains, the plaintiff makes a pretty laughable assertion that people guess third-level domain names (para. 41). It says: “someone searching for a blog about a particular subject or company is likely to try to find such a blog by guessing at a URL at a popular blog-hosting domain such as blogspot.com.” Are they kidding? Second-level domain name guessing has been on the wane for over a half-decade, and I find it incredible to believe that people go around guessing third-level subdomains. I’ll go one step further–I’m 99% confident that NO ONE has EVERguessed the domain jewsforjesus.blogspot.com (other than perhaps people affiliated with the organization prepping the lawsuit). I’d sure like to see some empirical evidence from the plaintiff supporting this assertion!

The main trademark infringement claim has other challenges as well. There has been a smattering of trademark infringement lawsuits involving parts of a URL other than the second-level domain. Two immediately come to mind: Patmont Motors v. Gateway Marine, 1997 WL 811770 (N.D. Cal. 1997) and Interactive Products Corp. v. a2z Mobile Office Solutions, Inc., 326 F.3d 687 (6th Cir. 2003). I suspect there are a few others. Both cases were defense wins, so the plaintiff in this case will have to do some work to distinguish them.

Depending on how the plaintiff tries to distinguish the precedent, the plaintiff may run headlong into 15 USC 1114(2)(D)(iii), which reads:

A domain name registrar, a domain name registry, or other domain name registration authority shall not be liable for damages under this section for the registration or maintenance of a domain name for another absent a showing of bad faith intent to profit from such registration or maintenance of the domain name.

Per 15 USC 1127, a ““domain name” means any alphanumeric designation which is registered with or assigned by any domain name registrar, domain name registry, or other domain name registration authority as part of an electronic address on the Internet” (emphasis added).

Read literally, a domain name registrar isn’t liable for trademark damages for registering someone else’s domain name (absent bad faith intent to profit). But is Google a domain name registrar in this context? Normally I would say no, but the definition of domain name covers more than second-level domains. Further, the complaint makes a point of referencing the URL as a domain name.

Therefore, if the plaintiff tries to get around the Interactive Products and Patmont cases by saying that this case involves domain names while those cases involved post-domain URL paths, I think the plaintiff runs squarely into the 1114 exculpation clause. If so, the plaintiff has to show that Google had a bad faith intent to profit, and I don’t think the alleged facts support that.

(I recognize that the registrar exculpation language in 1114 probably wasn’t intended to cover third-level subdomains, but I don’t see any reason why it can’t apply based on the statute’s plain language).

Finally, the complaint can’t decide if Google is the direct infringer or a contributory infringer. This is a pretty significant legal issue, but at least the plaintiff isn’t alone in waffling on this point (see the Ninth Circuit’s punt on this precise question in the Playboy v. Netscape case). I think the plaintiff will have significant difficulty proving that the blogger was a direct infringer–there isn’t any evidence of commercial activity by the blogger, so there may not be any trademark use in commerce. Even if there is a TM use in commerce, I think the court will have difficulty finding likelihood of consumer confusion (see the Lamparello case for almost identical facts). So I think the plaintiff’s only hope is to treat Google as a direct infringer. However, given that the blog currently doesn’t have any ads, I’m not sure how Google has made a trademark use in commerce itself.

Other Claims

The complaint makes a host of other claims, some of which would be laugh-out-loud funny if they didn’t border on Rule 11 violations. The complaint alleges contributory dilution (a theory that has been soundly rejected by the courts that have expressly considered it) and vicarious dilution (I believe this is a wholly novel cause of action), contributory and vicarious unfair competition (huh???) and other junk claims that will get a guffaw (and perhaps even a sanction or two) from the judge when granting the motion to dismiss.

Even if Google doesn’t get any sanctions, I expect Google will countersue the plaintiff. Google’s past litigation behavior has been pretty aggressive, and they like to go on the offensive. Fortunately for Google, this complaint may have enough junky claims to give them some grounds to do so.

Conclusion

This lawsuit shares one strong commonality with the Google keyword lawsuits–the plaintiff is suing the wrong party. If Jews for Jesus really believes that the blog is infringing its trademark, sue the blogger, but leave the blog service provider out of it.

This isn’t to say that Google doesn’t have some involvement in the matter. In this regard, I find it disconcerting how Google tries to play the innocent (a point I’ll address in more detail when I blog on search engine bias). For example, in its terse response to the plaintiff’s cease and desist letters, Google says “Blogger is a provider of content creation tools, not a mediator of that content.” This is true as far as it goes, but Blogger does far more than that–Blogger hosts the content and provides various marketing resources. Google isn’t nearly as passive as it would like to think it is.

However, even if Google isn’t a passive receptacle for blogger content, blog service providers are in a lousy position to police third party trademarks. Blogs change their content all the time, so it’s impossible to know a priori if the blog name accurately describes the contents. Plus, the service provider has no idea how the blogger is marketing the blog (or its name).

In this respect, consider the analogy to an email service provider. Someone may register an email address that contains a third party trademark–the email address isn’t inherently infringing, but an email user could commit trademark infringement based on how it uses the email address (e.g., to send spam for knockoff goods). Email service providers shouldn’t be liable for these infringements based on user-selected user names, just like blog service providers shouldn’t be liable for blogger-selected blog names.

UPDATE: Cédric Manara pointed out that Exhibit C of the comnplaint (page 39) shows that the blog did not always have its extensive disclaimer. I don’t think the disclaimer’s absence means much legally. I still think there was a trivial risk of consumer confusion without the disclaimer, and there’s still no evidence of TM use in commerce. However, the disclaimer makes it even less likely that consumers will be confused. Read Cédric’s other remarks about the case and analogous French case law. Cédric also finds other possible problematic blogs at Blogspot.

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I don’t think they’re quite as stupid as you think they are (although they’re still stupid). I think you missed a very probable, fifth possibility: Jews for Jesus has another, *non-dormant* website in mind as their real/ultimate target, and they’re using *this* one as their straw-man-argument case to get the decision they like.

So any publicity will point to the dormant one and be far less damaging than the other one they ultimately want to shut down (say, exjewsforjesus.blogspot.org).